Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amended limitation of “encoding, using a statistical analysis or a neural network”, see claims 1, 8 and 15, fails to meet the 35 U.S.C. 112(a) requirement for written description support. The specification merely repeats these contemplated fields of use of statistical analysis and neural networks along with a desire for achieving a functional end result of encoding audio datasets to perform basis functions, without providing any technical details as to how these fields of endeavor are used to achieve the end result.
MPEP 2163.03(v) cites Ariad Pharms., Inc. v. Eli Lilly & Co. as evidence that, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved” (emphasis added). This section also cites Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002) as evidence that, “The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."
Support for the use of statistical analysis and a neural network in the instant specification is limited to a single paragraph, [0008]. This paragraph provides illustrative usage scenarios of the instant invention including “Using statistical analysis techniques and/or neural network-based architectures, such as principal component analysis (PCA) and auto encoders, the set of basis functions, such as a set of signals, are decomposed and used to build more complex sounds.” This is equivalent to an expression of a desired use of the fields of statistical analysis and neural networks for achieving a stated end result of audio data encoding. Indicating a contemplated usage scenario involving principal component analysis without any further detail as to how this technique is applied (for example, how is a covariance matrix computed, and how is original data transformed?) is not seen as any further evidence of sufficient written description for the claim limitations at-issue.
Taking into consideration the level of ordinary skill in the art, the complexity of the art, and the criticality of the claimed feature to the practice of the invention, it is determined that there is insufficient support in the specification to conclude that Applicant had possession of the invention including the claimed encoding, using statistical analysis or neural networks, of audio datasets to output basis functions as of the effective filing date. Mere mention of a desire to apply some undisclosed statistical analysis or neural network methods for processing data to accomplish a new claimed end result is insufficient to prove the inventor had possession of the invention configured to accomplish the end result. The specification must particularly point out how statistical analysis techniques are implemented (such as by what algorithms and how the algorithms are used by programmed computers) and how neural networks are implemented (such as by what models, how they are trained and how they operate).
As an example of what would be considered sufficient written description to claim the use of neural networks for audio processing, see US 10,068,557 B1 to Engel et al. The specification of Engl goes into detail as to how an encoder neural network receives input, what type of input it receives, how the encoder neural network is structured (a stack of non-causal convolutional layers), how the encoder neural network operates (embedding certain information such as pitch information, upsampling processes, etc.), how the encoder neural network is trained (on a particular loss function which can be backpropagated through a decoder neural network and continue through an encoder neural network). This sort of detail stands in contrast to the instant disclosure that merely contemplates fields of use of neural networks or statistical analysis.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J HYLINSKI whose telephone number is (571)270-1995. The examiner can normally be reached Mon-Fri 10-530.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN J HYLINSKI/Primary Examiner, Art Unit 3715